Ex Parte Wolk et al

Board of Patent Appeals and Interferences

Jun 29, 2006

10414066 (B.P.A.I. Jun. 29, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARTIN B. WOLK,
JAMES G. BENTSEN,
RALPH R. ROBERTS,
JOHN S. STARAL AND
YINGBO LIN
____________

Appeal No. 2006-1510
Application No. 10/414,066
____________

ON BRIEF
____________

Before WARREN, KRATZ and JEFFREY T. SMITH, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.

REMAND TO THE EXAMINER
Upon a careful review of the record in this appeal, we determine that this
application is not in condition for a decision at this time. Accordingly, pursuant to our
authority under 37 CFR § 41.50(a)(1)(effective Sept. 13, 2004; 69 Fed. Reg. 49960
(Aug. 12, 2004); 1286 Off. Gaz. Pat. Office 21 (Sept. 7, 2004)), we remand this
application to the jurisdiction of the examiner for action consistent with our remarks
below.

Appeal No. 2006-1510
Application No. 10/414,066

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In the answer, the examiner maintains a § 103(a) rejection of
appealed claims 1, 4, 5, 13, 17, 18, 24, 25, 28-30, and 35-40 over
Mori (U.S. Patent No. 5,281,489) in view of Hosokawa (JP 2-
001- 097949) and Burroughes (GB 2348316). In so doing, the
examiner does not make of record and refer to a complete and
accurate verified full English language translation of the
Japanese language patent document relied upon. Rather, the
record includes a computer (machine) translation of the text of
the Japanese document. At the top of page 1 of the Hosokawa
Japanese document translation, a disclaimer as to the accuracy of
the translation is presented with the further liability
disclaimer that the “Japan Patent Office is not responsible for
any damage caused by the use of this translation.” A review of
the translation reveals that many sentences and phrases employed
therein employ incorrect terms, such as the apparent misuse of
the word “law” in numbered paragraph 107 of the computer
translation. Also, we note the “**” used in the translation to
indicate untranslated words. In this regard, appellants argue
that Hosokawa is not combinable as alleged by the examiner and
refer to numbered paragraph 138 of the computer translation at
page 5 of the reply brief. That referred to paragraph employs
the symbol for untranslated words.
Appeal No. 2006-1510
Application No. 10/414,066

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While the ultimate question of obviousness under 35 U.S.C.
§ 103 is one of law, the question can only be answered
after the requisite factual findings have been made. Such
factual findings can not be made from an unreliable translation.
Obtaining and considering an accurate, and verified English
language translation of the full text of the relied upon foreign
language document is necessary in furnishing reliable evidence
of the factual basis for making the ultimate determination of
patentability.
Accordingly, this application is remanded to the examiner
for the purpose of securing a complete and accurate verified
English language translation of the relied upon Japanese document
and clarifying the examiner’s rejection in light of the English
language translation of the relied upon Japanese document that is
secured and ultimately made of record. A copy of the translated
document should be forwarded to appellants. The examiner should
fully explain how the relied upon publication is being applied by
referring to the verified accurate English language translation
that is obtained by page and line (or numbered paragraph) in any
rejection maintained in a supplemental examiner’s answer that may
be ultimately prepared in response to this remand.
Appeal No. 2006-1510
Application No. 10/414,066

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Moreover, should the examiner issue a supplemental answer,
the examiner should fully respond to the arguments presented in
the reply brief.
CONCLUSION
For the reasons outlined above, this application is remanded to the jurisdiction of
the examiner. Pursuant to the provisions of 37 CFR § 41.50(a)(2) (effective Sept. 13,
2004; 69 Fed. Reg. 49960 (Aug. 12, 2004); 1286 Off. Gaz. Pat. Office 21 (Sept. 7,
2004)), appellants are required to timely respond to any supplemental examiner’s
answer that may be issued in response to this remand. As stated in this rule, appellants
must exercise one of the two following two options to avoid sua sponte dismissal of the
appeal as to the claims involved in the remand: (I) request that prosecution be reopened
before the examiner by filing a reply under Rule 111 with or without amendment or
evidence or (ii) request that the appeal be maintained by filing a reply brief as provided
in 37 CFR § 41.41.

This application, by virtue of its “special” status, requires an immediate action;
see MPEP § 708.01 (D)(8th ed., Rev. 3, Aug. 2005).
Appeal No. 2006-1510
Application No. 10/414,066

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REMANDED

CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
Appeal No. 2006-1510
Application No. 10/414,066

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